Full question:
I wish to register a service mark. I am using the words 'Planetary Psychology' as a service mark. I am trying to understand the requirements that it cannot be 'merely descriptive.' I did have these words as a service mark in California but it expired. I have to re-register, but now I am wondering if these words fall under 'merely descriptive' and will not be service marked. What would be an example of a servicemark that is not descriptive?
- Category: Copyrights
- Date:
- State: California
Answer:
The distinctiveness requirement for trademarks may be satisfied by proof that the mark is descriptive, suggestive, arbitrary, or fanciful. Proof that a mark is generic will defeat a claim for trademark protection. For a trademark to receive and retain its distinctiveness, the mark must fall into one of four categories: descriptive, suggestive, arbitrary, or fanciful. One level more distinctive than a generic mark, descriptive marks will not receive trademark protection unless they have acquired a secondary meaning, which happens when a significant portion of consumers identify the mark as signifying a particular manufacturer's good. Suppose the Jones Sport and Recreation Company sought trademark protection for their line of bicycles known as the "blue bike." The word blue does almost nothing to distinguish Jones' product from other bikes with the same color being sold by competitors. But now suppose that Jones has spent millions of dollars over the last several years marketing its product, and sales of the "blue bike" have grown to such a degree that bicycle-buying Americans now identify blue bikes as originating from the Jones' company. Then Jones' mark may have acquired secondary meaning, and thus its "blue bike" is much more likely to receive federal trademark protection. Suggestive marks imply a quality or characteristic of a product that goes beyond merely describing it. These kinds of marks require consumers to use their imaginations to make the connection between the mark itself and the product it represents. As a result, suggestive marks can receive federal trademark protection immediately upon their first use. Examples of suggestive marks include Orange Crush (orange-flavored soft drink), Playboy (sexually oriented magazine for men), Ivory (white soap), and Sprint (long-distance telephone company).
One may apply for trademark registration with either the principal register or the supplemental register of the U.S. Patent and Trademark Office. The principal register records descriptive, suggestive, arbitrary, and fanciful marks that have acquired secondary meaning. The supplemental register records descriptive marks that are capable of acquiring secondary meaning but have not yet acquired that meaning in the minds of many consumers. Once a mark acquires secondary meaning, however, it can be transferred from the supplemental register to the principal register.
This content is for informational purposes only and is not legal advice. Legal statutes mentioned reflect the law at the time the content was written and may no longer be current. Always verify the latest version of the law before relying on it.
